Noah Systems, Inc. v. Intuit Inc.

Failure to disclose all of the algorithms necessary for the claimed functions will be treated as if no algorithm was disclosed at all.

Opinion (O’Malley): Noah Systems, Inc. sued Intuit, Inc., claiming Intuit’s Quicken and QuickBooks programs infringed its patent, No. 5,875,435 (’435), which covered an automated system that allowed customers to connect to, and exchange financial information with, other entities’ computer systems. The district court granted Inuit’s motion for summary judgment, holding that the “’access means’ limitation” contained in the disputed claims of the ’435 patent required disclosure of the algorithm used by the system, lest the claims be found indefinite and invalid. Noah appealed, arguing the district court erred in determining that no algorithm was present. The Court of Appeals agreed that an algorithm was disclosed, but upheld the district court’s grant of summary judgment because the algorithm disclosed only applied to some, but not all, of the identifiable functions recited in the claims. Noting that the purpose of requiring disclosure of the algorithm was “to prevent purely functional claiming,” the Court rejected Noah’s argument that it was sufficient if a person skilled in the art would have been able to devise the algorithm necessary for performing those functions for which no algorithm was disclosed. Because the patent only disclosed an algorithm for one of the functions related to the ‘means access’ limitation, the limitation was indefinite; and since all of the claims at issue included that limitation, they were also invalid as indefinite. Thus, the Court of Appeals AFFIRMED Intuit’s motion for summary judgment.